Protecting Your Reputation
We understand that protecting a company’s brand and the reputation and image of its products or services is critical to success in today’s marketplace. Whether it involves asserting or defending claims of trademark infringement or false advertising, we provide our clients with unmatched client service and in-depth substantive experience.
Attorneys in our trademark and false advertising litigation practice bring with them decades of experience and knowledge across diverse industries. We have a sophisticated understanding of the trademark and advertising laws that affect our clients, including the Lanham Act; Federal Trade Commission Act; Food, Drug & Cosmetics Act; and state unfair competition and false advertising laws. Our clients represent a broad range of fields, including financial services, the Internet, consumer products, telecommunications, food and beverage, electronics, publishing, chemicals, pharmaceuticals, software, and personal care and cosmetics.
Experienced and Successful Litigators
We are, first and foremost, trial lawyers, with an established record of courtroom success in trademark and false advertising cases. The clients for which we have handled such matters include a host of well-known brand owners, including Charles Shaw Wine, Dow Jones, Gillette, Nestlé, Oscar de la Renta and Simmons Bedding.
Our clients’ disputes often span multiple countries, and we work closely with a network of trusted international counterparts to coordinate a global strategy for such matters. Trademark or false advertising disputes often require immediate action, and our attorneys are well versed in helping clients obtain injunctive relief, including temporary restraining orders. When resolution outside the courtroom is not possible, we vigorously represent our clients in both jury and nonjury trials, in federal, state and appellate courts, and arbitration tribunals. We can quickly assemble an experienced team, including expert witnesses, who can guide a client through discovery, trial preparation and trial.
We routinely and deftly represent clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. We also have substantial experience in litigation between licensors and licensees, and in franchise disputes. Our attorneys have handled numerous Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings to protect clients’ trademarks against infringing domain names, and have litigated cybersquatting actions and disputes over search engine keyword advertising, metatags, pop-up ads and other types of online piracy and infringement.
With respect to advertising litigation, our practice encompasses all manner of disputes, including intercompetitor controversies involving false or misleading statements, comparative advertising, claim substantiation, and consumer class actions. In addition to jury and bench trials in federal and state courts, we have substantial experience in proceedings before industry and regulatory bodies such as the National Advertising Division, the FDA and the Federal Trade Commission, and are familiar with the nuances of their policies and procedures.
Problem Solvers and Trusted Advisors
We are skilled negotiators and committed problem solvers who do not believe that every dispute requires litigation, which can be protracted and expensive. When disputes arise, we counsel clients on alternatives to litigation, including informal and formal methods of resolution. We bring a practical and cost-conscious approach to every matter and strive to find ways to resolve disputes as efficiently as possible, consistent with the client’s objectives. When alternative dispute resolution is appropriate, we bring to bear our substantial experience in mediation and arbitration.
Exceptional Client Service
In both counseling and litigation, our commitment to client service is simple: collaborate with clients to create effective solutions that respond to their business needs. We work in a manner that is efficient, effective and consistent with the client’s strategic objectives.
Experience & Awards
Our trademark and false advertising litigation experience includes a number of precedent-setting cases and other significant engagements. Here are some noteworthy examples:
- We achieved a favorable settlement for Emerson Electric in a trademark dispute brought by Emerson Quiet Kool in the District of Delaware.
- We represent Bureau National Interprofessionnel du Cognac in an appeal to the Federal Circuit in an opposition to a third party’s use of the mark “COLOGNE & COGNAC ENTERTAINMENT” for hip-hop music production services.
- We successfully defended a U.S. university in a copyright and trademark infringement suit brought by MMAS Research and Dr. Morisky, who claimed that the university had impermissibly used a questionnaire in which he claimed copyright and related common law trademark rights. We also counselled and defended a separate U.S. university in a copyright and trademark dispute over similar allegations by the same professor. Both disputes settled on favorable terms. We also provided Tulane University with counselling and advice in connection with trademark licensing.
- We represented SAP in a trademark infringement matter against a major competitor. After filing our complaint, that competitor immediately sought settlement on terms favorable to SAP, ultimately resulting in the competitor agreeing to cease all use of the accused mark globally.
- We represented a designer shoe company in a lawsuit alleging trademark infringement, among other claims, against the company’s former founder and creative director, who had sold rights in his business and name and then created a new separate footwear business. We were able to obtain a permanent injunction on favorable terms to our client
- We represented TRIA Beauty, the leading maker of laser-based aesthetic devices for home use, in trademark, false advertising and unfair competition matters throughout the United States.
- We regularly represent the Institut National de l’Origine et de la Qualité, an agency of the French government responsible for regulating the use of noteworthy product names based on geography of production, in disputes over unauthorized use of those names in brands and other product designations in the United States. Additionally, we represent the Comité Interprofessionnel du Vin de Champagne and the Bureau National Interprofessionnel du Cognac, both of France, in similar matters. We have appeared in numerous trademark opposition proceedings in the U.S. Trademark Trial and Appeal Board, including a precedent-setting and successful opposition to registration of the mark "Canadian Mist and Cognac."
- World Trademark Review’s WTR1000 2023 – Our trademark group has been ranked as a top firm in Massachusetts for trademark law in Massachusetts. Multiple attorneys ranked as leaders in their field in Washington, D.C. and Massachusetts.
- U.S. News & World Report – Best Lawyers “Best Law Firms” 2023 – Our intellectual property group is nationally recognized in the United States.
- Chambers Global: The World’s Leading Lawyers for Business 2023 – Intellectual property group recognized in the Asia-Pacific region, and in China, South Korea and the United States, with multiple attorneys ranked as leaders in the field in these regions.
- Chambers USA: America’s Leading Lawyers for Business 2023 – Our intellectual property group is recognized in California, Massachusetts and New York, with multiple attorneys ranked as leaders in the field.
- Chambers Asia-Pacific: Asia’s Leading Lawyers for Business 2023– Our intellectual property group is recognized in the Asia-Pacific region, and in China and South Korea, with multiple attorneys ranked as leaders in the field.
- Asian Legal Business IP Rankings 2023 – Ropes & Gray as Tier 2 for copyrights/trademarks in China in Hong Kong and South Korea.
- The Best Lawyers in America (2006-2023) – Multiple intellectual property partners from Boston, New York, San Francisco and Silicon Valley were recognized as leaders in their field.
- Managing IP Stars 2023– Recognized nationally in the United States, China and Japan, and in California, New York, Washington, D.C., Virginia and Massachusetts as a top law firm for intellectual property. Multiple IP attorneys recognized as litigation stars.